A federal judge in the Eastern District of Virginia ordered the USPTO to cancel the Washington Redskins’ 6 federal trademark registrations earlier this July, stating the team’s name may be offensive to Native Americans. This order continues a long-standing periodic legal battle dating back to 1992: Blackhorse v. Pro-Football/Pro-Football v. Blackhorse. Through his order and opinion, Judge Lee upheld last years 2-1 ruling by the USPTO judicial panel, the Trademark Trial and Appeal Board that the team’s name and logo should not be eligible for federal trademark registration because they are disparaging to Native Americans and therefore ineligible for federal trademark protection under the Lanham Amt, which bars protection for names that may disparage or bring people into contempt or disrepute.
The PTO will not remove the marks from the register until the team has exhausted its appeals, which their lawyer, Robert Raskopf, says they plan to do, stating that cancellation of the trademark, which the team has proudly used for more than 80 years, infringes on its free-speech rights. The team also argued in its most recent appeal that a cancellation of its trademarks could taint its brand by removing legal benefits and protection against copycats. Overall, their position is that they are being stripped of a valuable commodity without just compensation. In court papers, the Redskins lawyer said that the teams brand management, into which the organization had invested money, promotion, and protection, was valued at $214 million.
U.S. District Judge Gerald Bruce Lee wrote supported his decision with the following main points:
- That there is ample evidence that the name may be perceived as disparaging, even though the team claims that this name honors the group: “The evidence before the Court supports the legal conclusion that between 1967 and 1990, the REDSKINS Marks consisted of matter that may disparage a substantial composite of Native Americans.” He rejected the team’s argument that the vast majority of Native Americans had no objection to the names when the registrations were granted in 1967 and 1990, pointing out that Webster’s Collegiate Dictionary defined the word as “often contemptuous” in 1898, seventy years prior to the registration of the first mark.
- The judge also responded to the claim that this trademark registration is free speech, stating that federal law allows the government to exercise control over the content of the trademark registration program: “First, federal trademark registration … communicates the message that the federal government has approved the mark … Second, the public closely associates federal trademark registration with the federal government as the insignia for federal registration.” To support his stance, he cited a recent Supreme Court First Amendment ruling on specialty license plates, Walker v. Texas Division, Sons of Confederate Veterans. In June, the high court said Texas could reject a request for a license plate featuring the Confederate battle flag, concluding that license plates are “government speech” and fall outside First Amendment protection. Judge Lee wrote that the federal trademark registration program is “government speech,” over which it may exercise editorial discretion, and therefore exempt from First Amendment scrutiny.
In a parallel case in the Federal Circuit, regarding the trademarked band name, THE SLANTS, Judge Moore disagreed with Judge Lee’s approach to the provision, stating that “although the government publishes registered trademarks in the Trademark Principal Register, it does so not to communicate a particular message or select a particular viewpoint; rather, it publishes trademarks to provide notice that a mark has been registered” and “the public must believe that the trademarks carry the stamp of government approval … and they currently do not.” Judge Moore also pointed out that “PTO operations are now funded entirely by registration fees, not taxpayers.” As a result, the government plays more of a regulatory role. The Fifth Circuit echoed Judge Moore’s sentiment in the Walker case, holding that license plate designs were private speech and, by denying plate designs on grounds of being offensive to the public, the Texas DMV Board engaged in constitutionally forbidden viewpoint discrimination.
This decision will not force the team to change its name, nor to stop using the marks. The team can still use the REDSKINS name, sell t-shirts and other merchandise and can most likely still enforce certain common law trademark rights for its ‚unregistered marks‘. It can also seek trademark protection under state law.
It does mean, however, that the team loses certain rights and legal protections. This cancellation dilutes the Redskin’s legal protection against infringement, specifically in terms of blocking counterfeit merchandise at customs or recovering actual damages, attorneys fees, and injunctions.
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